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How To Perform A Patent Search Worldwide And Assess International Filing Potential

Posted by Barry Choobin | Nov 22, 2022 | 0 Comments

Several steps exist to successfully perform a patent search worldwide and assess international filing potential. Global patent searches are immensely important for inventors considering worldwide protection. This is increasingly common nowadays – especially with rapidly growing commercial markets in Europe, Asia, and the Middle East. Unlike a domestic-only patent search report, these in-depth, thorough examinations evaluate prior art references from all over the globe. As an inventor yourself, you should know how to perform this comprehensive level of advanced search. This way, you can lower infringement risks, accelerate the time-to-commercialization, and reduce redundant patenting work. Read on to learn about performing a patent search worldwide and assess international filing potential.

Hire An Experienced Attorney

To simplify, accelerate, and optimize the worldwide patent searching process, it is highly recommended to hire a knowledgeable, qualified, and experienced intellectual property (IP) attorney. Your patenting lawyer will stop as your one-stop shop for strategic guidance, reliable insights, major questions, or key concerns throughout the entire IP acquisition office. To find the right attorney, look for somebody with years of experience drafting, filing, and prosecuting intellectual property applications. If possible, they should hold experience in a similar commercial field or industrial sector as your invention. Surely, hire an experienced patent search attorney to perform an intellectual property search worldwide.

Familiarize Yourself With Global Patent Offices

Before you start searching, you need to get familiar with official, worldwide patent filing options. In the US, patent applications are handled by the United States Patent and Trademark Office (USPTO). In Europe, inventors will work with the European Patent Office (EPO). Some other prominent examples include the United Kingdom (IPO), Canadian (CIPO), New Zealand (IPONZ), and Korean (KIPO) Intellectual Property Office. Your attorney may also cross-check your search with entries from the China National Intellectual Property Administration (CNIPA) or Japan Patent Office (JPO). Certainly, get familiar with global IP offices when you conduct a patent search worldwide.

Start A Keyword Brainstorm

Now, you are ready to start brainstorming, listing, and organizing keywords. Later on, this will save you lots of time, energy, and resources during the patent search international process. Your certified patent search company can help you a lot throughout this stage. However, it helps to first have a baseline idea of some of your top focus terms and key phrases. This way, they can easily enter this information into their preferred patent searching platform. These keywords give your patent firm a clearer understanding of your overall search intent. With these insights, they'll be able to produce the most accurate and up-to-date results.

Use A Global Patent Database

To produce accurate worldwide patent search results, your IP attorney will primarily work with a powerful online global patent database. These portals allow lawyers to quickly search prior art records from international, national, as well as local intellectual property offices. Of course, your selected attorney will do the majority of the heavy lifting throughout this process. Many of the top databases store well over 100 million relevant documents. They allow prosecution teams to additionally filter results by ID number, international classification, industry, or publication date. Indeed, use a global patent database when performing a worldwide patent search report.

Prepare For Next Steps

At this point, it is time to start planning for the next steps in the global patent searching process. If you receive positive results, you'll immediately be ready for the next step of patenting. Start off by filing a provisional patent application (PPA). With a PPA, you'll receive full use over the “Patent Pending” status for a limited, one-year pendency. After the expiration of this twelve-month period, you'll need to upgrade to either a design or utility patent. These formal documents give you complete, legally-binding intellectual property rights for up to twenty years. Absolutely, prepare for the next steps after completing your worldwide patent search report.

There are several key steps to perform a global, worldwide, and international patent search. Start off by hiring a dependable, knowledgeable, and low cost patent search attorney. Next, familiarize yourself with the intellectual property offices that exist all across the globe. From here, you can start putting together your initial keyword brainstorm. Then, start entering your chosen terms and phrases into a global IP database. From here, you can start getting ready for the next upcoming steps. Follow the points above to learn about performing a patent search worldwide and assess international filing potential.

About the Author

Barry Choobin

Barry Choobin with Jonathan W. Dudas. Jonathan W. Dudas served as Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office until January 18, 2009. Barry Choobin is Chief Executive Officer at Patent 360 LLC. Applying his business and tech...

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